Should you Transform Your Pre-AIA Application to an AIA Application?

By Dennis Crouch

In the lead-up to March 16, 2013 the patent office received an influx of tens-of-thousands of patent application filings. That date is important because new applications filed on or after March 16, 2013 are examined under the first-to-file rules of the America Invents Act (AIA). At first glance, that influx suggests that applicants overwhelmingly prefer the prior first-to-invent rules. That suggestion makes sense since the AIA generally expands the scope of prior art available to adjudge patentability. However, the reality is that early filing might me more properly seen as a hedge against the potential that the new rules are too harsh on patentees. As I discuss below, the AIA offers an easy mechanism for any pre-AIA patent application to be transformed into an AIA patent application and it turns out that there are several major reasons why a patentee might prefer its patents to be adjudged under the AIA rules.

Transforming to an AIA Patent: The basic rule is that the first-to-file rules of the AIA apply to any application with at least one claim whose priority date is on or after March 16, 2013. The mechanism then is to file a follow-on application, such as a continuation-in-part (CIP) application, that adds some new matter and a new claim. The result of that filing then is that the entire application and resulting patent will be judged under the AIA first-to-file rules. To be clear, the CIP transforms the entire application to an AIA application – even claims that are identical to those that were in the original pre-AIA application and that were fully supported by that original pre-AIA application. Although I use a CIP as an example here, any new filing that properly adds new matter and that results in a related new claim will qualify.

The procedure is easy – the larger question is why a patent applicant would prefer an AIA patent to a pre-AIA patent. Some reasons:

  • AIA patents are (likely) not subject to being invalidated based upon pre-filing secret sales; secret offers to sell; or secret uses.
  • AIA patents have expanded the scope of the Create Act so that would-be anticipating prior art is also negated. The basic idea is that non-public prior filings by a research partner will not negate patentability.
  • AIA patents that stem from a foreign-filing count as prior art as of their priority filing date. This change effectively overrules the Hilmer doctrine and essentially makes AIA patents (and their associated published applications) much more powerful as a form of prior art.
  • At the same time, claims that were fully supported by the original priority filing will still get that priority date even when being adjudged under the new law.

Depending upon your particular factual situation, these reasons may justify a transformation of a pre-AIA application to an AIA application. Directly on point, this opportunity suggests that attorneys revisit pending pre-AIA cases that involved some pre-filing commercial activity to nail down whether any pre-filing sales activity took place. This issue is especially important when you consider cases like Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., 726 F.3d 1370 (Fed. Cir. 2013). In that case the Federal Circuit found the patent-in-suit invalid based upon an offer from a foreign supplier to produce the product on behalf of the patentee. That is the sort of secret on-sale activity that will not serve as prior art for AIA patents. If that pre-filing on-sale activity was kept confidential then a transformation to an AIA application may make sense.

The transformation to an AIA application should probably be seen as a hedge rather than transformation because it does not require abandonment of the pre-AIA application. Thus, the same original priority filing that was filed before March 16, 2013 could result in a family of patents, some of which are adjudged under the pre-AIA rules and others that are adjudged under the AIA rules. The basic business question then for these pending pre-AIA questions is not whether the potential AIA patent is more likely to be valid than a pre-AIA patent. Rather, the hedging question is whether the addition of an AIA patent covering parallel subject matter adds enough value to be worth the costs.

There are a number of caveats to this procedure. Here are three. First, as I mentioned above, the transformation process requires the addition of new matter and a new claim that includes some of that new matter. I would expect some equitable risk for patent applicants in situations where it is clear that the new matter was only added as a formality in order to use this procedure. Defendants could potentially raise inequitable conduct or laches defenses based upon a patentee's claiming that some new matter was patentable when the only true purpose of the new matter was for the old claims to be interpreted under the new rule. In a similar vein, this approach raises double-patenting questions and it is somewhat unclear how double patenting issues will be resolved under the AIA. Finally, it is important to make clear that these transitional applications will not avoid 102(g) prior art based upon the transitional provisions found in the AIA.

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Note, I had been thinking some about this issue but my post here was triggered by a recent presentation by Bryan Diner from Finnegan who, in turn, recognized Tom Irving and his related Jedi Master Mixer strategy.

11 thoughts on “Should you Transform Your Pre-AIA Application to an AIA Application?

  1. There does not seem to be an inequitable conduct issue. You can add grape jelly to the spec as a new matter topping for a computer and add it to a computer claim, and you clearly fall under AIA and nobody is fooled. I don’t see any requirement that the elements in a claim establishing AIA status lend patentability, in and of themselves, to any claim. The elements establish AIA status merely because they are not supported by a pre-AIA spec. There is no need to assert that the new matter is patentable.

  2. “AIA patents that stem from a foreign-filing count as prior art as of their priority filing date.”It is the application-at-issue, not the prior art patent that needs to be AIA for the foreign-filing date to count. As long as there is a US/PCT publication, the publication will be prior art back to the foreign priority date, regardless of whether the publication is of an AIA application.

  3. Is there another advantage of AIA, with respect to a disclosure prior to a foreign filing. If there is a pre-filing disclosure, and a US application claims priority to a foreign application, pre-AIA the grace period was measured from the US filing date, but the foreign priority date, but post-AIA you measure the grace period from the foreign priority date. In other words, the effective filing date is now the foreign filing date, not the US or PCT filing date…

  4. Post-AIA, the USPTO requires a different form of inventor declaration. Thus, you also need to consider inventor availability to sign a new declaration.

  5. Also, it is my understanding that one could use a by-pass continuation for PCT applications filed before 16 March 2013 in order to be in AIA land.

    1. That’s right, there are any number of combinations of two filings that could be used involving PCT’s; foreign priority documents; provisional applications; CIPs; etc.

    2. You can do it off a provisional, too. As long as you are adding new matter. For the bypass (or provisional) file one with the new matter and one without so you have two cases going, one pre-AIA and one AIA.

  6. “AIA patents that stem from a foreign-filing count as prior art as of their priority filing date.”Even without a US filing, wouldn’t the corresponding foreign app be prior art anyway against other AIA patents?

    1. Under the Hilmer doctrine, the foreign application is only prior art as of its publication date. For AIA patents, the priority document becomes prior art as of its filing date (once the AIA application is published or issues).

  7. I think a simpler way to put would be to frame this as a discussion which updates the traditional question and evaluation of patent family management (specifically in regards to child filings) .Such is always a question of cost in comparison to value. Since a requirement of new matter is present to gather the new date, I do not see how a question of equity is implicated. Filings still (as before) require an oath and a good faith belief that an invention is described in the filing. The date is a factor quite easily brushed aside as out of control of the patent applicant, and any charge of gaming the system should only be contemplated if a reasonable (and substantiated belief) exists. Since new matter is required, and since there is no direct imputation of unethical behavior even for adding ‘old’ new matter that could have been added before, the theory of inequity presented is rather weak.

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